FCA Dismisses Appeal; Upholds Finding That Obviousness Allegations Are Justified (Intellectual Property Weekly Abstracts Bulletin – Week Of September 21)

NOC PROCEEDINGS

FCA Dismisses Appeal; Upholds Finding that Obviousness Allegations are Justified Alcon Canada Inc. v. Actavis Pharma Company, 2015 FCA 191 Drug: moxifloxacin

The Federal Court of Appeal (FCA) issued two sets of reasons stemming from two appeals between these companies. Both appeals were from the same Federal Court decision (here, summary here). In this case, the Application Judge held that the allegations as to obviousness were justified. The FCA dismissed the appeal.

The FCA held that the patent related to a new dose for a known use of a known compound. The FCA held that as long as a judge does not misidentify or misapply the legal test, the deferential standard of palpable and overriding error applies to the analysis. Furthermore, the FCA held that if the judge's reasons are alive to the issues, the judge is assumed to have considered all of the evidence and there is no palpable and overriding error due to a failure to reference a particular piece of evidence. The FCA held that its role was not to re-weigh evidence on appeal.

FCA Dismisses Appeal; Upholds Grant of Prohibition Order in Face of Lack of Sound Prediction and Obviousness Allegations Actavis Pharma Company v. Alcon Canada Inc., 2015 FCA 192 Drug: moxifloxacin

In the second case, Actavis appealed the grant of a prohibition order by the Application Judge. At issue was whether the patent was invalid for lack of sound prediction and utility and for obviousness. The Application Judge held that the allegations were not justified and the FCA dismissed the appeal.

The patent claimed moxifloxacin and its stereoisomers and mixtures. The FCA held that construction of the patent is a matter of law, to be reviewed on a correctness standard; whereas sound prediction and obviousness are matters of mixed fact and law, to be reviewed on a standard of palpable and overriding error. The FCA held that the Appellant was essentially re-arguing its case, asking it to prefer different evidence.

Court Refuses Prohibition Order; Finds Allegations of Non-infringement and Obviousness Justified Eli Lilly Canada Inc. v. Apotex Inc., 2015 FC 1016 Drug: tadalafil

The Federal Court dismissed the proceeding, refusing to grant Lilly a prohibition order in relation to its formulation patent. The Court held that the allegations of non-infringement and obviousness were justified, however, the allegation of invalidity due to lack of utility was not justified. Furthermore, the proceeding was not an...